1 McCarthy on Trademarks and Unfair Competition 7:49 (4th ed.)

Transcription

1 1 McCarthy on Trademarks and Unfair Competition 7:49 (4th ed.) McCarthy on Trademarks and Unfair Competition, Fourth Edition Database updated March 2015 J. Thomas McCarthy Chapter 7. Trademark and Trade Dress Formats II. COLOR References 7:49. Functional uses of colors are not protectable West's Key Number Digest West's Key Number Digest, Trademarks 1057(2) A color that performs some utilitarian function in connection with a product cannot be appropriated as a trademark under the general rule that no functional feature can be a valid trademark. In some cases, the functionality bar for colors will overlap with the generic bar.[fn0.50] For example, as indicated in the first example below, the amber color of mouthwash cannot be the exclusive property of any one seller both in the sense that the color is functional in signifying an unflavored, medicinal flavor as well as being a generic indication of the flavor of the mouthwash. Examples of Functional Use of Colors. The following is a list of examples of product colors held to be unprotectable because they were held to be functional: Amber mouthwash: functional because amber liquid signifies an unflavored, medicinal mouthwash[fn1] Black bottle for soft drink: functional as keeping out light and keeping consumer from seeing contents[fn3] Black on treads of ladder: functional because it does not show wear and dirt[fn4] Black outboard motor: functional because black has the attributes of decreasing the apparent size of the motor and ensuring compatibility with many different boat colors[fn5] Blue dot on photo flashbulb: change of color indicates air seal leak[fn6] Blue nitrogen fertilizer: functional because users of fertilizer and the scientific

2 community use the color blue to designate nitrogen and hence there is a competitive need to dye nitrogen fertilizer the color blue[fn7] Blue endoscopic probes used for gastrointestinal conditions: plaintiff failed to prove that the color blue did not make the probe more visible against human tissue when seen though an endoscopic camera.[fn7.50] Brown colored tire repair product: functional due to a red lead component essential to the manufacturing process[fn8] Brownishpink line on ophthalmic lens: functional in reducing light reflection and refraction[fn9] Brown chocolate ice cream and other flavorindicating colors[fn9.50] Color coded replacement parts for automobile transmissions: functional in assisting in their installation[fn10] Gold edges on a high quality cook book eliminated unsightly differences in the colors of the page ends[fn11] Gold and silver colored disposable plastic serving platters: functional in providing a luxurious look[fn12] Gray in promotional materials advertising surgical instruments: functional because it highlights the design of the instruments in [plaintiff's] catalogs"[fn13] Green farm accessories: functional because farmers like to have accessories colorcoordinated with their John Deere green tractors[fn14] Orange markings on medical feeding tubes for newborns were functional to indicate enteral use only to prevent misconnections by medical personnel.[fn14.50] Pink wound bandages and dressings to blend with skin tones of Caucasian or white people[fn15] Purple for sandpaper: functional in a field where color is often used to distinguish the grit size of the abrasive.[fn15.50] Rainbow of colored candles arranged on a shelf[fn16] Red filter on end of flashlight: functional in serving as a safety and warning light[fn17] Reddishorange hue of safety earplugs: functional because such a bright color aided in monitoring for employee compliance with health and safety regulations[fn18]

3 Reflective coating on the top end of a metal fence post: functional because it is the simplest and least expensive way to apply reflective coating to a fence post.[fn18.50] Various colors of medicinal capsules and tablets[fn19] White handle for professional cutlery: functional because it assists in determining cleanliness of the handle[fn20] White uniforms and trucks of GOOD HUMOR ice cream vendors: aids in visibility[fn21] Yellow and orange pay telephone booths: functional in increasing visibility to pedestrians and motorists[fn22] Yellow packaging for sucralose sweetener[fn22.50] Yellow for vapor barrier: functional for easier identification of holes and gaps[fn22.70] Examples of Nonfunctional Use of Colors. To be contrasted is the following list of colors which were held to be nonfunctional: Blue design motif for retail newsstand: not functional[fn23] Brown and clear color of drug capsule[fn24] gold color for box and tube of NEOSPORIN antibiotic medication[fn24.50] Six primary colors on faces of RUBIK's CUBE puzzle: held not functional and protected as against imitator[fn25] Specific colors to denote different language versions of guidebook: held not functional and are protectable as part of trade dress[fn26] Look to Functionality of the Overall Combination. Under the general rule of trade dress, if the plaintiff defines its trade dress as a combination of elements, the combination can be nonfunctional even though some individual elements may be functional. Thus, the Seventh Circuit said that while the colors of individual parts of a folding table might be functional, it is error to focus on the individual ele ments rather than the overall trade dress combination, which is protectable[fn27] Aesthetic Functionality. Using the theory of aesthetic functionality, a few courts have expanded the meaning of functional to include merely ornamental features which function to improve the appearance of goods and help sell them,[fn28] while the majority of courts have defined functionality to cover only features that directly contribute to the utilitarian functionality of a product.[fn29] However, to constitute a trademark or trade dress, a color or a design involving colors must in fact serve to

4 identify and distinguish source and not merely or solely serve a decorative purpose. For example, while color is a prominent feature of many advertisements and catalogs, a background use of color hardly ever serves as protectable trade dress giving exclusive rights.[fn30] The Second Circuit rejected the lower court's statement that a single color of wearing apparel is inherently aesthetically functional and can never serve a trademark role in the fashion industry.[fn30.25] The court found that plaintiff Christian Louboutin's highfashion signature red shoe sole contrasting with the color of the shoe upper had achieved a secondary meaning but was not infringed by defendant Yves Saint Laurent's monochrome red shoe with both upper and sole in a single red color.[fn30.50] The court affirmed the decision denying a preliminary injunction.[fn30.75] Case Examples of Functionality of Colors. In a case cited by the Supreme Court, apparently with approval, the Federal Circuit held that an allblack outboard motor was functional and not registerable because black has the special functional attributes of decreasing the apparent size of the motor and ensuring compatibility with many different boat colors.[fn31] In the COCOQUININE case,[fn32] the United States Supreme Court stated that there was no exclusive right to use chocolate as an ingredient for a quinine preparation. The chocolate served a functional purpose in this usage and anyone could duplicate its appearance as long as adequate labeling precautions were taken to prevent confusion of source: Chocolate is used as an ingredient not alone for the purpose of imparting a distinctive color, but for the purpose also, of making the preparation particularly agreeable to the palate, to say nothing of its effect as a suspending medium. While it is not a medicinal element in the preparation, it serves a substantial and desirable use, which prevents it from being a mere matter of dress. It does not merely serve the incidental use of identifying the respondent's preparation, and it is doubtful whether it should be called a nonessential. The petitioner or anyone else is at liberty, under the law, to manufacture and market an exactly similar preparation containing chocolate, and to notify the public that it is being done.[fn33] In an early case involving colored kitchen match heads and tips, the court noted that such a use of red and blue colors was functional, in that a color must be used to distinguish the striking tip of the match from the head of the match.[fn34] Color Used Solely to Indicate Aspects Such as Size, Capacity or Strength. When color is used only to indicate a characteristic of the product, such as size, capacity or strength, it is functional.[fn35] The Trademark Board will take the color depletion theory in account in connection with the rule of functionality. The Board held that the color green for wrappers for band saw blades was unregisterable as functional because it constituted one of a series of colors coding for types and sizes of blades.[fn36] Similarly, the Federal Circuit held that a color coding system used to indicate the diopter strength of eyeglasses was functional and did not serve a trademark purpose.[fn37] Similarly, the Board held that the color deep purple for sandpaper was functional in a field where color is often used to distinguish the grit size of the abrasive.[fn37.50]

5 Color Used to Enhance Safety or Comply with Regulations. The Board held that the bright reddishorange hue of safety earplugs was not registerable as mark because such a color functionally aided in monitoring for employee compliance with health and safety regulations.[fn38] The federal court in Los Angeles found that orange markings on medical feeding tubes for newborns were functional to indicate enteral use only, in order to prevent misconnections by medical personnel.[fn38.50] Color Used to Increase Visibility. The Trademark Board held unregisterable as functional both orange colored and yellow colored pay telephone booths. Those bright colors were found to be functional because their high visibility in many different lighting conditions makes them more clearly discernible to the driver or pedestrian.[fn39] These kinds of utilitarian colors for phone booths should be free for all competitors to use. Color was found to be functional in adding visibility in the surgical context for blue endoscopic probes used for gastrointestinal conditions. The Federal Circuit held that plaintiff failed to prove that the color blue did not make the probe more visible against human tissue when seen though an endoscopic camera.[fn39.50] Psychologically Functional Use of Color. The meaning of functional in the context of a color for a medicinal preparation was considerably expanded in the PEPTOBISMOL case when the court inferred that merely the purported soothing psychosomatic effect of the color pink for a stomach upset remedy might be characterized as functional. [FN40] However, a caveat is in order against judges and lawyers making such a psychological conclusion without objective evidence. How does anyone know exactly what reaction the color pink produces in people with upset stomachs? It may make them feel worse, depending upon their subjective reactions to various colors which vary widely among different people. A similar assessment of functional psychological reaction to color was made by a court that inferred that pastel shades in facial tissues create a mental impression of softness and denied any trademark rights in such shades.[fn41] Traditional Functional Use of Color. Some colors may be functional in that they are traditional when they appear in a given context, such as red and green used for ribbons and bows on Christmas presents.[fn42] Another example would be the use of red for heart designs used in connection with Valentine's Day greeting cards and gifts, such as a red for a heartshaped box of chocolates. [FN0.50] See discussion of generic and descriptive colors at 7:52. [FN1] Warner Lambert Co. v. McCrory's Corp., 718 F. Supp. 389, 12 U.S.P.Q.2d 1884 (D.N.J. 1989) (Amber color of LISTERINE was functional: [T]he amber color has taken on a particular significance in the mouthwash industry. An amber liquid signifies an unflavored, medicinal mouthwash. Thus, WarnerLambert can have no monopoly on the use of an amber color for unflavored mouthwash. ). [FN3] California Crushed Fruit Corp. v. Taylor Beverage & Candy Co., 38 F.2d 885 (W.D. Wis. 1930). [FN4] Black & Decker Mfg. Co. v. EverReady Appliance Mfg. Co., 518 F. Supp. 607,

6 213 U.S.P.Q. 842 (E.D. Mo. 1981), aff'd, 684 F.2d 546, 215 U.S.P.Q. 97 (8th Cir. 1982). [FN5] Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994). Compare L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 U.S.P.Q.2d 1307 (Fed. Cir. 1999) (Court held that the color compatibility of a brick finish on the plate of an interior lighting fixture with the color and decor of the furnishings does not alone make the design functional. Mere taste or preference cannot render a color unless it is the best or at least one, of a few superior designs de jure functional. ). See M5 Steel Mfg., Inc. v. O'Hagin's Inc., 61 U.S.P.Q.2d 1086, 2001 WL (T.T.A.B. 2001) (Following Brunswick case: shape of roof vent is functional because the vents blend in or match the roof tiles with which they are used better than alternative products. ). [FN6] Sylvania Elec. Products, Inc. v. Dura Elec. Lamp Co., 247 F.2d 730, 114 U.S.P.Q. 434 (3d Cir. 1957). [FN7] NorAm Chemical Co. v. O. M. Scott & Sons Co., 4 U.S.P.Q.2d 1316, 1987 WL (E.D. Pa. 1987). [FN7.50] ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 1289, 97 U.S.P.Q.2d 1048 (Fed. Cir. 2010). [FN8] North Shore Laboratories Corp. v. Cohen, 721 F.2d 514, 221 U.S.P.Q. 17 (5th Cir. 1983). [FN9] Bausch & Lomb Incorporated v. Univis, Inc., 132 U.S.P.Q. 213, 1961 WL 7881 (T.T.A.B. 1961). [FN9.50] Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1204, 70 U.S.P.Q.2d 1707, 64 Fed. R. Evid. Serv. 617 (11th Cir. 2004) (Colors indicated flavor, such as pink signifying strawberry, white for vanilla and brown for chocolate. The District Court properly took judicial notice of the fact that color indicates flavor of ice cream.). [FN10] Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 225 U.S.P.Q. 458, 227 U.S.P.Q. 598, 82 A.L.R. Fed. 97 (9th Cir. 1985) (the court upheld a jury verdict which expressly found that Transgo's colorcoded springs served primarily to help rebuilders install Transgo's auto transmission kits rather than to designate Transgo as the kits' manufacturer). See Kasco Corp. v. Southern Saw Service Inc., 27 U.S.P.Q.2d 1501, 1993 WL (Trademark Trial & App. Bd. 1993) (Applicant's various color coded wrappers, including the green wrapper at issue serve to enable purchasers and users of the blades to quickly identify and distinguish one blade type from another. Thus, the various colored wrappers have a functional or utilitarian purpose. ). [FN11] Publications Intern., Ltd. v. Landoll, Inc., 164 F.3d 337, 49 U.S.P.Q.2d 1139 (7th Cir. 1998), cert. denied, 526 U.S. 1088, 119 S. Ct. 1498, 143 L. Ed. 2d 652 (1999) (Gold

7 edges on a high quality cook book were said to be aesthetically functional. However, in the author's opinion they could as well have been dubbed utilitarian in that gilding the pages eliminated unsightly differences in the colors of the page ends.). [FN12] Sabert Corp. v. Ullman Co., Inc., 53 U.S.P.Q.2d 1597, 1999 WL (S.D. N.Y. 1999), aff'd without pub. op. 216 F.3d 1073 (2d Cir. 2000) ( If this court were to uphold plaintiff's trade dress, it could potentially result in a permanent monopoly for plaintiff in the specialized market for disposable platters designed to imitate the look of real silver and gold. ). [FN13] Specialty Surgical Instrumentation, Inc. v. Phillips, 844 F. Supp. 1211, 30 U.S.P.Q.2d 1309 (M.D. Tenn. 1994). [FN14] Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 217 U.S.P.Q. 252 (S.D. Iowa 1982), aff'd, 721 F.2d 253 (8th Cir. 1983). [FN14.50] Acacia, Inc. v. NeoMed, Inc., 103 U.S.P.Q.2d 1898, 2012 WL (C.D. Cal. 2012). [FN15] In re Ferris Corp., 59 U.S.P.Q.2d 1587, 2000 WL (T.T.A.B. 2000) ( [T]he appliedfor color pink is one of the best or at least one of the few superior flesh colors available for wound dressings. ). [FN15.50] SaintGobain Corp v. 3M Co, 90 U.S.P.Q.2d 1425, 1447, 2007 WL (T.T.A.B. 2007) ( In the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing. ). [FN16] Yankee Candle Co., Inc. v. Bridgewater Candle Co., Inc., 99 F. Supp. 2d 140, 55 U.S.P.Q.2d 1393 (D. Mass. 2000), aff'd on other grounds, 259 F.3d 25, 59 U.S.P.Q.2d 1720 (1st Cir. 2001) ( The visual arrangement of candles, on shelves, by color, is manifestly functional and therefore not protectable under the Lanham Act. ). [FN17] U.S. Elec. Mfg. Corp. v. Bright Star Battery Co., 6 N.Y.S.2d 690 (Sup 1938). [FN18] In re Howard S. Leight and Associates Inc., 39 U.S.P.Q.2d 1058, 1996 WL (Trademark Trial & App. Bd. 1996). [FN18.50] Application of Pollak Steel Co., 50 C.C.P.A. 1045, 314 F.2d 566, 570, 136 U.S.P.Q. 651 (1963) (Not registerable on the Supplemental Register. To permit appellant to assert trademark rights in its alleged mark would clearly have the effect of unjustifiably giving appellant a perpetual monopoly on the simplest and cheapest use of a simple process of applying a functional reflective coating to a functionally designed metal fence post. ).

8 [FN19] See drug color cases cited at 7:50. See, e.g., Upjohn Co. v. Schwartz, 246 F.2d 254, 114 U.S.P.Q. 53 (2d Cir. 1957) (size, shape and color of medicinal capsules or tablets held functional and incapable of acquiring secondary meaning). [FN20] Russell Harrington Cutlery, Inc. v. Zivi Hercules, Inc., 25 U.S.P.Q.2d 1965, 1992 WL (D. Mass. 1992) (white colored handle for professional cutlery held functional because it assists in the essential determination as to whether a knife handle is clean, plaintiff's advertising touting the sanitary qualities of its knives, claiming that they are easy to keep clean ). [FN21] New York Good Humor v. Standard Commercial Body Corp., 145 Misc. 752, 260 N.Y.S. 167, (Sup 1932), aff'd, 237 A.D. 859, 261 N.Y.S. 933 (2d Dep't 1932) ( Plaintiff can claim no monopoly in painting trucks white, and lettering them in black. [T]he truck is white with black lettering, for the reason that it will be more conspicuous at night, during which time Nadel sells his product, from vantage points on the highways. ). [FN22] In re Orange Communications Inc., 41 U.S.P.Q.2d 1036, 1996 WL (Trademark Trial & App. Bd. 1996) ( [H]ere the colors orange and yellow are performing a desirable function and competitors should be free to use them. Registration to applicant would affect the ability of competitors to compete because they would have to devise other means of making pay telephones and telephone booths more noticeable to the public. ). [FN22.50] McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 85 U.S.P.Q.2d 1545 (3d Cir. 2007), on remand, 566 F. Supp. 2d 378, 88 U.S.P.Q.2d 1594 (E.D. Pa. 2008) (The court implied, but did not hold, that the color yellow was a functional or generic indicator of sucralose sweetener and was not a trademark of the market leader SPLENDA.). See discussion of this case at 7:52. [FN22.70] PolyAmerica, L.P. v. Stego Industries, LLC, 482 Fed. Appx. 958, 104 U.S.P.Q.2d 1639 (5th Cir. 2012) (nonprecedential). [FN23] In re Hudson News Co., 39 U.S.P.Q.2d 1915, 1996 WL (Trademark Trial & App. Bd. 1996) (blue design motif for retail newsstand services was held not functional, but was not registrable because not proven to have been used as a service mark). [FN24] Marion Laboratories, Inc. v. Michigan Pharmacal Corp., 338 F. Supp. 762, 173 U.S.P.Q. 410 (E.D. Mich. 1972), aff'd, 473 F.2d 910 (6th Cir. 1973) (brown and clear color of drug capsule held nonfunctional but no relief on the facts). [FN24.50] Johnson & Johnson v. Actavis Group hf, 87 U.S.P.Q.2d 1125, 2008 WL (S.D. N.Y. 2008), as corrected, (Feb. 21, 2008) (rejecting argument that gold was functional as indicating an antibiotic ingredient).

9 [FN25] Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 216 U.S.P.Q. 102 (3d Cir. 1982); In re Certain Cube Puzzles, 219 U.S.P.Q. 322, 1982 WL (Int'l Trade Comm'n 1982) (the color pattern on a Rubik's Cube puzzle toy is a protectable trademark use of color and is not functional; secondary meaning was found through survey evidence); CBS, Inc. v. Logical Games, 719 F.2d 1237, 5 Int'l Trade Re. 1467, 221 U.S.P.Q. 498 (4th Cir. 1983) (CBS/Ideal Toy has secondary meaning in U.S. in the Rubik's Cube ). [FN26] Casa Editrice Bonechi, S.R.L. v. Irving Weisdorf & Co., Ltd., 37 U.S.P.Q.2d 1417, 1995 WL (S.D. N.Y. 1995) (no protectable rights in the mere concept of colorcoding different language versions where defendant changed to a different color for each language). [FN27] Vaughan Mfg. Co. v. Brikam Intern., Inc., 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) ( It strains the imagination to assert that someone designing such a table from scratch would ineluctably choose a yellow border, a masonite top of Vaughan's color, a black frame, and various brass pieces in the shapes that Vaughan uses, or that one seeking to buy a folding picnic table would necessarily prefer such a table over all others. ). See 7:76. [FN28] Ventura Travelware, Inc. v. Baltimore Luggage Co., 66 Misc. 2d 646, 322 N.Y.S.2d 93 (1971), aff'd, 38 A.D.2d 794, 328 N.Y.S.2d 811 (1st Dep't 1972) (colored stripe design on luggage held merely ornamental, and therefore functional ). See 7:79 to 7:80. [FN29] In re Data Packaging Corp., 453 F.2d 1300, 172 U.S.P.Q. 396 (C.C.P.A. 1972) (colored band on computer tape reel held nonfunctional); In re Hudson News, 39 U.S.P.Q.2d 1915 (T.T.A.B. 1996), aff'd without pub. opinion (Fed. Cir. 1997) (blue design motif for retail newsstand services was held not functional, but was not registerable because not proven to have been used as a service mark); Board of Supervisors of LA State University v. Smack Apparel Co., 438 F. Supp. 2d 653, 211 Ed. Law Rep. 809, 82 U.S.P.Q.2d 1122 (E.D. La. 2006), aff'd, 550 F.3d 465, 89 U.S.P.Q. 2d 1338 (5th Cir. 2008) (Summary judgment of infringement by selling without a license items of wearing apparel bearing the distinctive two color designs and logos of various universities. The color designs were not functional. ). [FN30] See, e.g., Ellison Educ. Equip. v. Tekservices, Inc., 903 F. Supp. 1350, 37 U.S.P.Q.2d 1563, 1569 (D. Neb. 1995) (Plaintiff's use of purple, green, blue and red silhouettes to display its wares in a catalog does not give trade dress rights of exclusion because they do not act as symbols for [plaintiff]. Instead, the colors serve the function of displaying the cut out shapes of the plaintiff's dies in its catalog. ). See discussion of trademark use at 3:3. [FN30.25] Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 103 U.S.P.Q.2d 1937 (2d Cir. 2012). See 7:80.

10 [FN30.50] Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d 1937 (2d Cir. 2012) (While plaintiff's registration was not limited to a contrasting red sole of footwear, the court exercised its power under Lanham Act 37, 15 U.S.C.A to rectify the register by limiting the mark and its registration to a red sole that contrasted with the color of the shoe upper. The court said it would not address whether the contrasting red sole mark was aesthetically functional.). See 30:109. [FN30.75] Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d 1937 (2d Cir. 2012) (While the court said that it did not address the issue of likelihood of consumer confusion, at the same time it held that the accused monochrome shoe was neither a use of, nor confusingly similar to, the Red Sole mark. ). [FN31] Brunswick Corp. v. British Seagull, 35 F.3d 1527, 1532, 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050,131 L. Ed. 2d 309, 115 S. Ct (1995). Cited as an example of a functional use of color in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 131 L. Ed. 2d 248, 115 S. Ct. 1300, 34 U.S.P.Q.2d 1161 (1995). See L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 U.S.P.Q.2d 1307 (Fed. Cir. 1999) (Court held that the color compatibility of a brick finish on the plate of an interior lighting fixture with the color and decor of the furnishings does not alone make the design functional. Mere taste or preference cannot render a color unless it is the best or at least one, of a few superior designs de jure functional. ). See 7:44. [FN32] William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 68 L. Ed. 1161, 44 S. Ct. 615 (1924). Distinguished in Ives Laboratories, Inc. v. Darby Drug Co., 638 F.2d 538, 209 U.S.P.Q. 449 (2d Cir. 1981), rev'd on other grounds, remanded, 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182, 214 U.S.P.Q. 1 (1982). [FN33] William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 68 L. Ed. 1161, 44 S. Ct. 615 (1924). See James Heddon's Sons v. Millsite Steel & Wire Works, Inc., 128 F.2d 6, 50 U.S.P.Q. 465, 53 U.S.P.Q. 579 (6th Cir. 1942), cert. denied, 317 U.S. 674, 87 L. Ed. 541, 63 S. Ct. 79, 55 U.S.P.Q. 493 (1942) (color on artificial fish lures may be functional). [FN34] Diamond Match Co. v. Saginaw Match Co., 142 F. 727, 729 (C.C.A. 6th Cir. 1906) ( The two colors, therefore, serve not only a useful purpose but an essential function, for the very essence of the tipped match is the tip itself, which must be marked out by a color of its own. The head and tip thus distinguished, each by its own color, is therefore a common characteristic of all tipped matches. ). [FN35] Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 227 U.S.P.Q. 598 (9th Cir. 1985), cert. denied, 474 U.S. 1059, 88 L. Ed. 2d 778, 106 S. Ct. 802 (1986) (color coded replacement parts for automobile transmissions were held functional in assisting in their installation); Spraying Systems Co. v. Delavan, Inc., 762 F. Supp. 772, 19 U.S.P.Q.2d 1121, 1128 (N.D. Ill. 1991), aff'd, 975 F.2d 387, 24 U.S.P.Q.2d 1181 (7th

11 Cir. 1992) (color coding system used to designate the capacities of spray nozzles is a functional use of color and cannot be protected); Kasco Corp. v. Southern Saw Serv., Inc., 27 U.S.P.Q.2d 1501 (T.T.A.B. 1993) (color coded wrappers are functional because they enable purchasers and users of saw blades to quickly identify and distinguish one blade type from another). See Fabrication Enters. v. Hygenic Corp., 64 F.3d 53, 35 U.S.P.Q.2d 1753 (2d Cir. 1995) (plaintiff claimed trade dress in different colored exercise bands, the color indicating the degree of resistance; while defendant claimed the colors were functional as an industry standard, contrary evidence required a trial and a reversal of the dismissal on summary judgment). See 7:52; 11:41. [FN36] Kasco Corp. v. Southern Saw Serv., Inc., 27 U.S.P.Q.2d 1501 (T.T.A.B. 1993) (Applicant's various color coded wrappers, including the green wrapper at issue serve to enable purchasers and users of the blades to quickly identify and distinguish one blade type from another. Thus, the various colored wrappers have a functional or utilitarian purpose. ). [FN37] AlSite Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 50 U.S.P.Q.2d 1161 (Fed. Cir. 1999) ( To give one competitor an exclusive right to practice color coding would give it a significant advantage over other companies. ). [FN37.50] SaintGobain Corp v. 3M Co, 90 U.S.P.Q.2d 1425, 1447, 2007 WL (T.T.A.B. 2007) ( [C]olor serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives. ). [FN38] In re Howard S. Leight & Assocs., 39 U.S.P.Q.2d 1058 (T.T.A.B. 1996). [FN38.50] Acacia, Inc. v. NeoMed, Inc., 103 U.S.P.Q.2d 1898, 2012 WL (C.D. Cal. 2012). [FN39] In re Orange Communications, Inc., 41 U.S.P.Q.2d 1036 (T.T.A.B. 1996) ( [H]ere the colors orange and yellow are performing a desirable function and competitors should be free to use them. Registration to applicant would affect the ability of competitors to compete because they would have to devise other means of making pay telephones and telephone booths more noticeable to the public. ). [FN39.50] ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 1289, 97 U.S.P.Q.2d 1048 (Fed. Cir. 2010) ( ERBE fails to present a genuine issue of material fact that the color blue does not make the probe more visible through an endoscopic camera or that such a color mark would not lead to anticompetitive effects. ERBE had a Supplemental Registration.). [FN40] Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569, 123 U.S.P.Q. 372 (2d Cir. 1959), cert. denied, 362 U.S. 919, 4 L. Ed. 2d 739, 80 S. Ct. 671, 124 U.S.P.Q. 535 (1960).

12 [FN41] Doeskin Products, Inc. v. Levinson, 132 F. Supp. 180, 105 U.S.P.Q. 329 (D.N.Y. 1955). See Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 217 U.S.P.Q. 252 (S.D. Iowa 1982), aff'd, 721 F.2d 253 (8th Cir. 1983) (color held functional because farmers like to have farm accessories colorcoordinated with their tractor). Compare In re Hudson News, 39 U.S.P.Q.2d 1915 (T.T.A.B. 1996) (blue design motif for retail newsstand services was held not functional because even if blue is psychologically soothing color, that does not necessarily mean that these people, as customers in applicant's newsstand, will buy more products ). [FN42] Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 U.S.P.Q.2d 1481 (8th Cir. 1994) (red and green cords used to tie the ends of a pillowshaped bag of potpourri is not protectable because such colors are traditionally used for products relating to Christmas and are therefore neither distinctive nor nonfunctional ). See In re J. Kinderman & Sons Inc., 46 U.S.P.Q.2d 1253 (T.T.A.B. 1998) (Red, green, and gold container that looks like a wrapped Christmas gift is not a registerable mark for Christmas tree lights because it is a common design and used only as ornamentation. It is common knowledge that stars and the colors red, green and gold are associated with the Christmas holiday. ). Westlaw Thomson Reuters. No Claim to Orig. U.S. Govt. Works. MCCARTHY 7:49 END OF DOCUMENT (c) 2015 Thomson Reuters. No Claim to Orig. US Gov. Works